Supreme Court Won’t Disturb New Test for Trademark “Dilution” Claims
March 30, 2011

The U.S. Supreme Court has let stand a ruling with important implications for advertisers of adult and other potentially lewd products. By refusing to hear an appeal in the closely watched V Secret Catalogue Inc. (Victoria’s Secret) v. Mosley case, the high court  indirectly endorsed an earlier decision from the Court of Appeals for the Sixth Circuit that made it easier for so-called “tarnishment” claims to succeed when the challenged mark was used in a “sex related” context. 

The Sixth Circuit decision established a “presumption” of dilution – an assumption that the use of a famous mark in connection with adult products is “likely to tarnish” that mark. Under the appeals court’s approach, the burden of proof would then shift to the user of the challenged mark to overcome this presumption with evidence. The evidence submitted by the user of the challenged mark must rebut "the probability that some consumers will find the new mark both offensive and harmful to the reputation and favorable symbolism of the famous mark." In other words, the user of the challenged mark would need to show “that there is no likelihood or probability of tarnishment.” In the Moseley case, the Moseleys did not satisfy their evidentiary burden, and Victoria''s Secret was able to stop them from using the name Victor''s Secret or Victor''s Little Secret for an adult-themed store. Conclusion: this is a good development for holders of famous trademarks seeking to challenge certain competitors or other perceived infringers on dilution or tarnishment grounds.

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